Ex Parte Silberberg et al

Patent Trial and Appeal Board

Sep 24, 2018

13140061 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/140,061 08/03/2011
53609 7590 09/26/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Eric Silberberg
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
508632 5801
EXAMINER
CHEN, KEATH T
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
09/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC SILBERBERG, LUC VANHEE,
BRUNO SCHMITZ, and MAXIME MONNOYER
Appeal2017-010104
Application 13/140,061
Technology Center 1700
Before JEFFREY T. SMITH, DONNA M. PRAISS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 20, 22-31, and 38 of Application
13/140,061 under 35 U.S.C. § 103(a) (pre-AIA). Non-Final Act. (Nov. 7,
2016) 4--19. Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Arcelormittal France is identified as the real party in interest. Appeal
Br. 2.
Appeal2017-010104
Application 13/140,061
BACKGROUND
The present application generally relates to an industrial vapor
generator for continuously vacuum coating a metallic substrate that is in
motion. Spec. ,r 1. The claimed apparatus permits the mixing of two
different metal vapors at a subsonic flow velocity, then deposits the metal
vapors so as to form a metal alloy coating that imparts corrosion resistance
properties. Id. ,r,r 1, 28.
Claim 20 is reproduced below with certain terms bolded for emphasis:
20. A facility for depositing under vacuum a metal alloy
coating on a substrate (7), equipped with a vapor generator-
mixer comprising a vacuum chamber ( 6) in the form of an
enclosure, the enclosure having a vacuum state therein relative
to the external environment and provided with means for the
inlet and outlet of the substrate (7), while still being essentially
sealed relative to the external environment, said enclosure
including a vapor deposition head, called ejector (3), configured
so as to create a jet of metal alloy vapor at sonic velocity
towards the surface of the substrate (7) and perpendicular
thereto, said ejector (3) being in sealed communication with a
separate mixer device (14), which is itself connected upstream
to at least two crucibles (11, 12), respectively, and comprising
different metals Ml and M2 in liquid form, each crucible (11,
12) being connected to the mixer (14) by its own pipe (4,4') so
that said flow velocity of said vapors at the inlet of the mixer
is lower than sonic velocity by at least a factor of 10,
wherein the mixer (14) comprises a series of partitions
allowing to separate at least two entering vapors, these
partitions creating orifices allowing the two vapors to exit so as
to be mixed in the form of alternating layers of both vapors in
the direction of the exiting flow, wherein said series of
partitions is in the form of a cylindrical envelope (I4C) inside
which, along the axis of the envelope, are located a plurality of
tubes (14A) arranged so as to create interstitial space all around
each tube and connected at the inlet to the supply pipe ( 4) of a
first metal vapor, the supply pipe (4') of a second metal vapor
2
Appeal2017-010104
Application 13/140,061
being connected, laterally relative to the cylindrical envelope, to
the interstitial space (14B) between the tubes (14A), the tubes
(14A) and the interstitial space (14B) having outlet orifices all
emerging on a space (15) where the mixing of the vapors can
occur,
and wherein the mixing of the vapors occurs at a flow
velocity that is sub-sonic.
Appeal Br. (Claims App. 1) ( emphasis added).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 20, 22, and 28-30 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as obvious over Schade van Westrum2 in view of
Shimogori, 3 and Pfefferle4. Non-Final Act. 4--10.
2. Claim 23 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Schade van Westrum in view of Shimogori, Pfefferle,
and Shimozato5. Id. at 10-11.
3. Claim 24 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Schade van Westrum in view of Shimogori, Pfefferle,
Kleyer, 6 and Sun 7. Id. at 11-13.
2 Schade van Westrum et al., US 2004/0022942 Al, published Feb. 5, 2004
("Schade van Westrum").
3 Shimogori et al., US 5,002,837, issued Mar. 26, 1991 ("Shimogori").
4 Pfefferle et al., WO 2008/002559 A2, published Jan. 3, 2008 (with
citations to United States counterpart US 2009/0251989 Al) ("Pfefferle").
5 Shimozato et al., US 4,587,134, issued May 6, 1986 ("Shimozato").
6 Kleyer, US 5,350,598, issued Sept. 27, 1994.
7 Sun et al., US 2002/0192375 Al, published Dec. 19, 2002 ("Sun").
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Application 13/140,061
4. Claims 25 and 26 are rejected under 35 U.S.C. § I03(a) (pre-AIA)
as obvious over Schade van Westrum in view of Shimogori,
Pfefferle, Kleyer, Sun, and Watanabe8• Id. at 13-14.
5. Claim 27 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Schade van Westrum in view of Shimogori, Pfefferle,
and Fondurulia9• Id. at 14--16.
6. Claim 29 is rejected, in the alternative, under 35 U.S.C. § I03(a)
(pre-AIA) as obvious over Schade van Westrum in view of
Shimogori, Pfefferle, and Sun. Id. at 16.
7. Claim 31 is rejected, in the alternative, under 35 U.S.C. § I03(a)
(pre-AIA) as obvious over Schade van Westrum in view of
Shimogori, Pfefferle, and Yuuki 10. Id. at 16-18.
8. Claim 38 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Schade van Westrum in view of Shimogori, Pfefferle,
Yoshida 11, and Ishii 12• Id. at 18-19.
DISCUSSION
Rejection 1. The first rejection (and all other rejections) depends, in
part, upon the teachings of Schade van Westrum in combination with those
of Pfefferle. Id. at 4--19. Appellants argue that the Examiner's rationale for
combining the teachings of Schade van Westrum and Pfefferle is improper.
8 Watanabe, US 6,423,144 Bl, issued July 23, 2002.
9 Fondurulia et al., US 2008/0085226 Al, Apr. 10, 2008 ("Fondurulia").
10 Yuuki et al., US 5,776,254, issued July 7, 1998 ("Yuuki").
11 Yoshida et al., US 4,786,490, issued Nov. 22, 1988 ("Yoshida").
12 Ishii et al., US 2004/0241189 Al, published Dec. 2, 2004 ("Ishii").
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Appeal2017-010104
Application 13/140,061
Appeal Br. 8-9. Appellants additionally argue that Schade van W estrmn
teaches away from the diffusion-driven mixing apparatus that the Examiner
relies upon in rejecting all claims at issue. Id. at 9-13.
Reason to Combine Schade van Westrum and Pfefferle
The claims at issue each require that metal vapors be mixed prior to
deposition on a metal substrate. Appeal Br. (Claims App. 1) (independent
claim 20). The claims further require that such mixing "occurs at a flow
velocity that is sub-sonic." Id. (see also claims 20 and 32 requiring vapor
flow velocity into the mixer "lower than sonic velocity" by at least a factor
of 10).
Appellants argue that the Examiner has erred by citing to a portion of
Schade van Westrum that concerns sonic flow rather than subsonic flow.
Appeal Br. 8-9. Appellants cite the following portion of the rejection in
support:
'559 is an analogous art in the field of Streamlined flow mixer
(title, similar to '837's mixing) particularly providing rapid
mixing while eliminating regions of low velocity ([0002]
similar to '942 's sonic flow mixing).
Id. at 8 (citing Non-Final Act. 8) (emphasis in Appeal Br.). Appellants
conclude that "the sonic mixing embodiments of. . . Schade van Westrum
cannot support a rationale to combine the reference with additional prior art
references." Id. at 9. Appellants are in error.
In general, a reference will qualify as prior art for purposes of
determining obviousness only when analogous to the claimed invention. In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The cited portion of the
rejection concerns whether or not Pfefferle is analogous art, not the
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Appeal2017-010104
Application 13/140,061
Examiner's reason to combine. The Examiner's determination regarding
reason to combine is found in a subsequent portion of the Non-Final Action.
See Non-Final Act. 9.
Appellants have not presented argument regarding the Examiner's
stated reason to combine nor regarding analogous art. Accordingly,
Appellants have not shown error in this regard.
Teaching Away
Appellants additionally argue that Schade van Westrum teaches away
from diffusion-driven mixing which employs subsonic flow velocities.
Appeal Br. 9-13.
Schade van Westrum includes discussion of subsonic ( unchoked,
diffusion-driven) mixture flow rates. See, e.g., Schade van Westrum ,r 51.
Schade van Westrum addresses the combination of metal vapors as follows:
Combining two or more gasses, or vapours, at fixed
flows and ratio's [sic], which is necessary for achieving a
constant quality (thickness and composition) of the coating, in
general proves difficult. Due to interactions of the gasses, these
may flow in undesired directions. Typically the vapour pressure
and temperature of each of the elements used for composing the
coating is quite different from that of the others. As a result,
the vapours, and more importantly, the vapour sources in the
evaporation chambers become polluted with vapours of the
other elements involved in the deposition process. Also, the
vapour having the smaller vapour pressure may be prevented
from deposition altogether.
In accordance with the invention, it has been found that
these problems associated with a process for vapour depositing
a coating of at least two elements may be overcome by
employing choking conditions.
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Appeal2017-010104
Application 13/140,061
Schade van W estrmn ,r,r 6-7. Schade van Westrmn further explains that
"choking" yields a sonic flow rate. Id. ,r,r 10-11.
Schade van W estrmn additionally includes a figure depicting various
designs for combining two gas flows, reproduced below.
a}
b)
c)
ln+Mg
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· ~ ..__~u-1"""!0"'...,..-.
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ml1dng..
,r OpUonat l'atttiutl!I not
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Figure 5 of Schade van Westrum shows three separate designs for mixing
gas flows. In Figure 5a, "[ t ]he separate zinc and magnesium flows are not
under choking conditions." Id. ,r 51. With regard to the embodiment of
Figure 5a, the reference teaches that "[b ]ecause the vapour pressures of both
elements are different and there is an 'open' connection between the vessels,
the mixture flow rate and composition will be difficult to control." Id.
Schade van Westrum further teaches that the metal vapor with the greater
pressure "may counteract or even prevent the diffusion of the element with
lower vapour pressure towards the deposition site." Id.
Thus, Schade van Westrum teaches that the embodiment of Figure 5a
is less preferred because it leads to difficulty in combining the two separate
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Appeal2017-010104
Application 13/140,061
metal vapors at fixed ratios. Appellants argue that Schade van Westrum's
disclosure "teaches away" from the Examiner's reliance on subsonic mixing.
A reference that properly teaches away can preclude a determination
that the reference renders a claim obvious. In re Mouttet, 686 F.3d 1322,
1333 (Fed. Cir. 2012) (citing DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1326-27 (Fed. Cir. 2009)). "A reference
'teaches away' when it 'suggests that the line of development flowing from
the reference's disclosure is unlikely to be productive of the result sought by
the applicant."' Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354
(Fed. Cir. 2012).
Here, Schade van Westrum teaches that unchoked, subsonic flow into
the mixing chamber, as shown in Figure 5a, is less preferred than the
embodiments of Figures 5b and 5c. Schade van Westrum does not,
however, teach that such embodiment is unworkable. Indeed, it states that
"[ o Jptional non-choking orifice plates can be introduced to enhance flow
distribution and of mixing" with the embodiment of Figure 5a. Schade van
Westrum ,r 51. Accordingly, the reference's teachings regarding subsonic
mixing have not been shown to be of the sort that would have led a person of
ordinary skill in the art away from such an embodiment.
Appellants additionally argue that, while an Examiner may rely on a
teaching in a prior art reference that leads away from the claims at issue in
an anticipation analysis, one may not do so in an obviousness analysis.
Appeal Br. 12-13. This is correct. See, e.g., Krippelz v. Ford Motor Co.,
667 F.3d 1261, 1269 (Fed. Cir. 2012) ("teaching away is not relevant to an
anticipation analysis; it is only a component of an obviousness analysis").
An Examiner may, however, rely on a nonpreferred embodiment. The
teachings of Schade van Westrum regarding subsonic mixing do not rise to
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Appeal2017-010104
Application 13/140,061
the level of "teaching away." Accordingly, the Examiner committed no
error in relying on such teachings.
In view of the foregoing, Appellants have not shown reversible error
in the rejection of claims 20, 22, and 28-30.
Rejections 2-8. Appellants rely upon the foregoing arguments in
support of their appeal of claims 23-27, 31, and 38. Appeal Br. 13-14. 13 As
we have not found such arguments to be persuasive, we determine that
Appellants have not shown error with regard to Rejections 2-8.
CONCLUSION
The rejections of claims 20, 22-31, and 38 are affirmed.
13 There is a discrepancy between Appellants' enumeration of the rejections
and the Panel's as Appellants do not separately list the Examiner's
alternative rejection of claim 29 (Panel Rejection 6). Final Act. 16; Appeal
Br. 4--5.
9